Claimant is J. Crew International, Inc. a corporation located at 802 West Street,
Suite102, Wilmington, Delaware 19801 USA with its corporate headquarters located
at 770 Broadway, New York, New York 10003 USA.

Respondent is "crew.com" an entity of unknown type located at P.O.
Box 9911, Washington, DC 20016 USA. Respondent's alter ego is Telepathy, Inc.,
which uses the identical post office box as Respondent, and which is listed
as the Administrative Contact, Technical Contact and Billing Contact for Respondent.
Respondent refers to itself in the Response as Telepathy, Inc. The only time
it used the business name "crew.com" was when it registered its domain name
<crew.com>. Respondent is not incorporated under the name "crew.com"
and has not filed an assumed name certificate under the name "crew.com."

2. The Domain Name and Registrar

The domain name at issue is <crew.com>. The registrar is Network Solutions,
Inc. (the "Registrar"), 505 Huntmar Park Dr., Herndon, Virginia 20170
USA.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received
the Complaint of Complainant on February 10, 2000 by email and on February 15,
2000 in hardcopy. The Complainant paid the required fee.

On February 16, 2000, the Center sent an Acknowledgement of Receipt of the
Complaint to the Complainant. On the same date, the Center sent to the Registrar
a request for verification of registration data. On February 16, 2000, the Registrar
confirmed, inter alia, that it is the registrar of the domain name in
dispute and that <crew.com> is registered in the Respondent's name.

Having verified that the Complaint satisfies the formal requirements of the
ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),
the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the "Supplemental Rules"), the Center on February 16, 2000 sent to
the Respondent, with a copy to the Complainant, a notification of the administrative
proceeding together with copies of the Complaint. This notification was sent
by the methods required under paragraph 2(a) of the Rules. The formal date of
the commencement of this administrative proceeding is February 16, 2000.

On March 7, 2000, the Center received Respondentís Response by email with hardcopy
received on March 9, 2000. On March 10, 2000, the Center sought clarification
of certain items in the Response and in correspondence from Complainant. On
March 24, 2000, after receiving their completed and signed Statements
of Acceptance and Declarations of Impartiality and Independence, the Center
notified the parties of the appointment of a three-arbitrator panel consisting
of Mr. Richard W. Page as the Presiding Panelist, Mr. Mark Partridge as Complainantís
party-appointed panelist and Mr. G. Gervaise Davis, as Respondentís party-appointed
panelist.

The Panel met by telephone conference call on April 5, 2000. In the Panelís
Procedural Order No.1delivered to the Center and the parties, the Presiding
Panelist confirmed the Panelís finding that the resolution of the present dispute
involved extraordinary circumstances warranting the extension of the deadline
to deliver the Decision until April 20, 2000.

4. Factual Background

Complainant is a leading retailer of women's and men's apparel, shoes and accessories
and is the owner of two United States trademarks (1) J. CREWfor bags,
clothing and catalog services, Reg. No. 1308888, issued December 11, 1984, and
(2) CREW for clothing, Reg. No. 1348064, issued July 19, 1985. Complainant has
been using its principal trademark is J. CREW since 1982. It has used in a more
limited manner its secondary trademark CREW for in-store signs, but not in its
primary advertising. Complainant's products are distributed exclusively through
the company's retail stores, factory outlet stores, catalogs and Internet site
www.jcrew.com. Complainant currently circulates over 73 million J. CREW catalogs
per year and operates over 80 J. CREW retail stores and 45 J. CREW factory outlet
stores. In 1998, products sold under the J. CREW brand name contributed $626
million in revenues. Revenues derived from the Internet were estimated at $20
million for 1998.

Respondent registered the domain name <crew.com> on July 12, 1998, then
later registered the domain name <j.crew.com> as a sub-account. Respondent's
alter ego is Telepathy, Inc., which uses the identical post office box as Respondent,
and which is listed as the Administrative Contact, Technical Contact and Billing
Contact for Respondent. Telepathy has registered or acquired more than 50 domain
names consisting of words that may be trademarks of others or are generic words
that others may wish to use. The identical post office box also is listed for
an individual named Nat Cohen, who is believed to be a principal of both Respondent
and Telepathy, Inc.

None of Telepathy's domain names (other than its own domain name <telepathy.com>)
is being used for an active website. Telepathy is clearly in the business of
offering its domain names for sale. Its purpose in registering or acquiring
these domain names has been expressly stated on its website, www.telepathy.com:

Telepathy has acquired attractive domains both for use in its own development
efforts and for its development partners and clients.

Telepathy registered or acquired these domain names primarily for the purpose
of selling, renting, or otherwise transferring the domain name registrations
to its "clients." The same appears to be true of Respondent's domain name <crew.com>.

Complainant registered the trademarks J. CREW and CREW before Respondent registered
the domain name <crew.com> or the variation domain name <j.crew.com>.

Respondent has used its domain name <crew.com> only for a website linked
to Complainant's web site, and for no other purpose.

After Respondent had registered the domain name <crew.com>, an employee
of Complainant invited Respondent to join Complainantís affiliate network. Pursuant
to this affiliate program, Respondent was permitted to place a banner ad on
Respondentís website which was linked to Complainantís website. Complainant
promised Respondent a commission for sales made to customers using that link,
but has apparently defaulted on its obligation. The only material on Respondent's
website was the banner ad linked to Complainant's website.

When Complainant's attorney asked Respondent's attorney whether Respondent
might be willing to sell its domain name <crew.com> to Complainant, Respondent's
attorney said that Respondent had "spent over 6 figures for domain names" and
"would not be interested in a nominal sum." Complainant then revoked Respondent's
participation in the affiliate network. Respondent is not a licensee of Complainant,
nor has Respondent ever been authorized by Complainant to use Respondent's domain
name <crew.com> or the variation domain name <j.crew.com>.

In response to a request by Complainant to Network Solutions, Inc. ("NSI"),
Respondent's domain name <crew.com> was placed on "Hold" on September
3, 1999 in accordance with NSI's Domain Name Dispute Policy. However, under
the new ICANN Uniform Domain Name Dispute Resolution Policy, NSI has informed
Complainant that Respondent's domain name <crew.com> will be reactivated
on February 11, 2000 unless it receives a copy of the Complaint in this matter.

5. Partiesí Contentions

A. Complainant contends that the domain name <crew.com> is identical
to the trademark CREW and confusingly similar to the trademark J. CREW pursuant
to the Policy paragraph 4(a)(i).

B. Complainant contends that Respondent has no rights or legitimate interest
in the domain name <crew.com> pursuant to the Policy paragraph 4(a)(ii).

C. Complainant contends that Respondent registered and is using the domain
name <crew.com> in bad faith in violation of the Policy paragraph 4(a)(iii).

D. Respondent does not contest that the domain name <crew.com> is identical
with the trademark CREW. Respondent does contest that the domain name <crew.com>
is confusingly similar to the trademark J. CREW.

E. Respondent contends that it has rights and legitimate interest in <crew.com>
because of Respondentís legitimate business of developing domain names for its
own use and for sale to its clients.

F. Respondent contends that its registration and use of <crew.com> is
in good faith because it had no actual knowledge of the CREW or J. CREW trademarks
when it registered the domain name and because it was asked to join Complainantís
affiliates group.

6. Discussion and Findings

Identity or Confusing Similarity.

The domain name presently at issue is <crew.com>. The "crew"
portion of this domain name is identical to Complainantís trademark CREW. Therefore,
a majority of the Panel finds that the requirement of the Policy paragraph 4(a)(i)
is satisfied.

The Complainant has not offered sufficient proof to warrant a finding the domain
name <crew.com> is confusingly similar to Complainant's trademark J. CREW
or to its domain name <jcrew.com>.

Rights or Legitimate Interest.

Respondent is a speculator who registers domain names in the hopes that others
will seek to buy or license the domain names from it. Speculation means the
practice of registering or acquiring domain names without any demonstrable plan
for a specific use of that domain name. The speculator hopes to license or sell
the domain name in the future for profit, but has no specific use in mind at
the time of registration or acquisition. Such conduct does not fall within any
of the circumstances listed under Paragraph 4 of the Policy as evidence of rights
or legitimate interest in the domain name. Such conduct precludes others who
have a legitimate desire to use the name from doing so. Persons precluded by
such conduct may be those who have no prior right or interest in the name, as
well as those who have a demonstrable prior interest in the name. Speculation
is not recognized by the Policy as a legitimate interest in a name, and the
Policy should not be interpreted to hold that mere speculation in domain names
is a legitimate interest. To hold otherwise would be contrary to well-established
principles that preclude mere speculation in names and trademarks and would
encourage speculators to appropriate domain names that others desire to put
to legitimate use. Ultimately, speculation in domain names increases costs to
the operators of websites and limits the availability of domain names.

The Complainant and the Respondent are both domiciled in the United States
of America. Therefore, the case law on United States trademarks gives the most
persuasive point of reference for resolution of the legitimacy of speculation
in domain names and provides authority that speculation in the registration
and use of domain names corresponding to another's trademark is an abusive registration.

Respondent asserts that its activities are no different than what other entrepreneurs
do in developing intent to use trademarks. However, Respondent is in error in
its suggestion that speculation in trademarks is permissible. Under United States
trademark law, an applicant must have a demonstrable bona fide intent to use
a trademark before filing an intent to use application. 15 U.S.C. 1051(b). Failure
to present evidence of a demonstrable plan to use the mark can result in a finding
that the application is invalid. See Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 U.S. P.Q.2d 1503, 1507 (T.T.A.B. 1993):

[W]e hold that absent other facts which adequately explain or outweigh the
failure of an applicant to have any documents supportive of or bearing upon
its claimed intent to use its mark in commerce, the absence of any documentary
evidence on the part of an applicant regarding such intent is sufficient to
prove that the applicant lacks a bona fide intention to use the mark in commerce.

Further, the applicant may not obtain a registration before it has made actual
use of the mark. 15 U.S.C. 1051(d). While the application is pending, the application
may not be sold to any other party except in connection with a sale of the underlying
business. 15 U.S.C. 1060. Otherwise, the application becomes void and any subsequent
registration is subject to cancellation. Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d
1098, 1104-1106 (T.T.A.B. 1996)(holding that the assignment of an intent to
use application and resulting registration were void). These statutory rules
were carefully considered and serve a valuable purpose of preventing mere speculation
in the registration of trademarks. As discussed in Clorox, the provisions of
United States law preventing the assignment of intent to use applications without
the sale of the underlying business is part of a strong public policy recognized
by the United States Congress to prevent trafficking or speculation in trademarks.
Id. at 1104. The policy against trafficking in trademarks has also been adopted
in other countries besides the United States.

The ICANN Policy is based on the principle of "abusive registration" set forth
in the Report of the WIPO Internet Domain Name Process, April 30, 1999 (the
"WIPO Report"). Paragraph 172 of the WIPO report identifies situations
not considered to fall within the definition of an abusive registration:

The cumulative conditions of the first paragraph of the definition make it
clear that the behavior of innocent or good faith domain name registrants is
not to be considered abusive. For example, a small business that had registered
a domain name could show, through business plans, correspondence, reports, or
other forms of evidence, that it had a bona fide intention to use the name in
good faith.

Here, Respondent has failed to show demonstrable evidence of plans to use the
domain name in good faith. Indeed, its response concedes that it had no definite
plan for use of the <crew.com> domain name when it obtained the registration
and made no bona fide use of the domain name prior to being contacted by Complainant
to participate in Complainant's affiliate program.

Respondent has given various justifications for its registration of <crew.com>,
claiming that the domain name could be used for rowing or for construction teams.
Shifting justifications for the selection of a domain name has been deemed to
support a finding of bad faith. See Northern Light Technology, Inc. v. Northern
Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(finding the
defendantís various explanations to be mere pretext).

Mere speculation in domain names is distinguishable from the conduct allowed
in other cases where the domain name registrant has prevailed over the objections
of a trademark owner. For example, in Avery Dennison Corp. v. Sumpton, 189 F.3d
868 (9th Cir. 1999), on which Respondent relies, the defendant was
making bona fide use of the domain names at issue. That is not the case here.
Further, the Court decisions have not yet interpreted the meaning of "abusive
registration" within the context of the ICANN policy.

This also is not a case of reverse domain name "hijacking." The typical
case of reverse domain name hijacking arose where a trademark owner would use
the old NSI policy to place a domain name on "Hold" status even though
the domain name holder was using the name in connection with unrelated goods
or services or was already known by the name. Here, Respondent has not presented
any evidence of demonstrable plans to use the domain name in connection with
a bona fide offering of goods or services or actual use of the domain name.
Rather, it has registered the domain name for purely speculative purposes despite
the fact that it had constructive notice as a matter of law that the name was
a registered trademark of another.

Therefore, a majority of the Panel finds that Respondent has no rights or legitimate
interest in the domain name <crew.com> and that the requirement of the
Policy paragraph 4(a)(ii) is satisfied.

Bad Faith.

Paragraph 4 of the Policy provides that evidence of bad faith registration
and use includes circumstances showing:

(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct.

a. Preclusion

Respondent's registration prevents Complainant from using the <crew.com>
or <j.crew.com> domain names corresponding to Complainantís registered
trademarks. We recognize that Complainant has registered the domain name <jcrew.com>.
However, the ability of the Complainant to obtain alternate domain names should
not make this provision inapplicable. Otherwise, the provision would always
be inapplicable for it would nearly always be possible for the Complainant to
obtain an alternative domain name or even to register the same name as its trademark
in another gTLD or ccTLD.

b. Constructive Notice

Although Respondent claims it acquired the domain name without knowledge of
Complainant's trademark registration, Respondent had constructive notice of
that registration as a matter of United States trademark law pursuant to 17
U.S.C. 1072. As a result, Respondent cannot rely on lack of knowledge as a defense
to its conduct. It knew or should have known that its registration of <crew.com>
prevented Complainant from reflecting its CREW trademark in a corresponding
.com domain name. Because of the constructive notice provisions of United States
trademark law, lack of actual knowledge is not a defense and it is not necessary
to find actual knowledge to conclude that the use or registration of a mark
is in bad faith.

c. Pattern of Conduct

Respondent admits it is engaged in a pattern of conduct involving the speculative
registration of domain names for profit. While Respondent owns a long list of
registrations, it has given only one example where it has made bona fide use
of a domain name. This pattern of conduct prevents others from making bona fide
use of desirable domain names that may correspond to their trademarks.

Therefore, a majority of the Panel finds that Respondent has registered and
used the domain name <crew.com> in bad faith and that the requirement
of the Policy paragraph 4(a)(iii) is satisfied.

Prior Decisions Regarding Speculation

A majority of the Panel has considered the decision in General Machine Products
Company, Inc. v. Prime Domains, ICANN Case No. FA0001000092531, finding that
registration of the domain name <craftwork.com> was not an abusive registration.
In General Machine, Respondentís alter ego Telepathy, Inc. (then known as Prime
Domains) was in the business of selling generic and descriptive domain names.
Respondent demonstrated that the phrase "craftwork" was commonly used as a descriptive
term, and claimed that it registered the domain name without actual knowledge
of the complainant's trademark because it had widespread use as a descriptive
or generic term.

Although General Machine appears to be directly applicable to the present case,
the panel in that case did not discuss the fact that Respondent had constructive
notice as a matter of law of the complainant's mark and the decision does not
disclose whether the Respondent had a demonstrable plan to use the domain name
when it was registered. A majority of the present Panel could only agree with
the result in General Machine if there were evidence of a demonstrable plan
at the time of registration. If it is the holding of the panel in General Machine
that the Policy permits speculative registration of names that happen to be
the trademarks of others without a demonstrable plan for bona fide use of the
domain name, then a majority of the present Panel must respectfully disagree
with the decision.

In reaching our opinion we are well aware that trademarks are not "rights in
gross" and we do not think our opinion grants trademark owners rights beyond
those recognized under applicable law, particularly in the United States where
Congress has enacted the Anti-Cybersquatting Consumer Protection Act ("ACPA"),
in part, to prevent trafficking in domain names that are the same as the trademarks
of another. See, for example, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies,
2000 U.S. Dist. LEXIS 3936 (S.D.N.Y. March 30, 2000)(denying cross motions for
summary judgment due to factual disputes); Northern Light Technology, Inc. v.
Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000)(refusing
to modify preliminary injunction against northernlights.com domain name based
on ACPA). In Cello Holdings, the Court stated that a reasonable fact finder
could conclude the defendant had a bad faith intent to profit from registration
of a domain name that matched the plaintiff's CELLO mark because " he had no
proprietary rights to the ĎCelloí mark when he registered Ďcello.com,í he had
not previously used it, and he had engaged in a pattern of registering domain
names that could be of interest to others and then trying to sell them." Thus,
our conclusion--that the Respondent's registration of <crew.com> was an
abusive registration--is consistent with the scope of protection afforded consumers
and trademark owners under U.S. law.

7. Decision

The majority of the Panel does not decide that all speculation in domain names
is prevented by the Policy. Rather, for the purpose of this case, we merely
hold that registration of domain names for speculative purposes constitutes
an abusive registration when (1) the respondent has no demonstrable plan to
use the domain name for a bona fide purpose prior to registration or acquisition
of the domain name; (2) the respondent had constructive or actual notice of
another's rights in a trademark corresponding to the domain name prior to registration
or acquisition of the domain name; (3) the respondent engages in a pattern of
conduct involving speculative registration of domain names; and (4) the domain
name registration prevents the trademark holder from having a domain name that
corresponds to its registered mark. This definition is consistent with the considerations
stated in the WIPO Report and allows speculation in domain names that do not
correspond to registered marks or where the registrant has a demonstrable plan
to use the domain name for a bona fide purpose prior to registration or acquisition.

A majority of the Panel concludes (a) that the domain name <crew.com>
is identical to the trademark CREW, (b) that Respondent has no rights or legitimate
interest in the domain name and (c) that Respondent registered and used the
domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy
and 15 of the Rules, a majority of the Panel orders that the domain name <crew.com>
be transferred to Complainant J. Crew International, Inc.

Richard W. Page
Presiding Panelist

Mark V.B. Partridge
Panelist

April 20, 2000

DISSENT BY PANELIST

I respectfully dissent from the decision of the majority of this panel because
their decision creates and applies a test for "abusive domain name registrations"
which is not, in my opinion, part of the ICANN Uniform Dispute Resolution Policy
nor consonant with the stated and very limited purpose of this Policy. It does
so in what I deem a mistaken view that it is up to the panel to enforce a non-existent
policy of ICANN to prevent people from registering domain names for resale to
others than the trademark owner. Whether such activity is proper or improper
is not before us under the ICANN Policy and we do not, in any event, have the
authority to so decide under the ICANN rules. Even if the decision were correct
under the Anti-Cybersquatting Consumer Protection Act [1],
which I do not think is the case, we are not here authorized to apply that Act
which differs significantly from the ICANN Policy and Rules. The majority decision
goes far beyond the scope of the present ICANN Policy.

The panel holds "that the registration of domain names for speculative purposes
constitutes a abusive registration when (1) the Respondent has no demonstrable
plan to use the domain name for a bona fide purpose prior to registration or
acquisition of the domain name; (2) the Respondent had constructive or actual
notice of another's rights in a trademark corresponding to the domain prior
to registration or acquisition of the domain name; (3) the respondent engages
in a pattern of conduct involving speculative registration of domain names;
and (4) the domain name registration prevents the trademark holder from having
a domain name that corresponds to its registered trademark."

Unfortunately, the biased test the panel has used here automatically creates
a situation, in every case, where there is only one element left to test, if
the Complainant has a registered trademark and the domain registered by the
Respondent is similar to the Complainantís registered trademark. Since every
ICANN case, by definition, has to have these two other elements the decision
obviates two thirds of the tests set up under the ICANN Policy. The majority
view boils each case down to the single question, "Did the Respondent have a
specific bona fide purpose or use in mind prior to acquisition of the domain
name?" It rejects the idea that someone might not know exactly how he or she
intends to use the domain name, and makes such uncertainty bad faith registration.
That is not what the Policy we, as rule bound arbitrators, are directed to apply
by the Rules.

The majority has identified the second element as "knowledge." This test, however,
is always satisfied per se by what the majority identifies as automatic
"constructive" notice of another's trademark rights. This is not a test, since
this element would be satisfied for all registered trademarks by virtue of the
simple fact of registration under the majorityís logic.

Similarly, the third element of the majority's test is also satisfied per
se anytime the second level domain name and the registered trademark are
similar or identical. Thus, the only test left, in each case, is whether the
Respondent had a demonstrable plan to use the domain name for a bona fide purpose
prior to registration or acquisition of the domain name. This is a gross over-simplification
of the issues involved in preventing abusive domain name registrations. It ignores
the planned limits of the ICANN Policy and adds wholly new purposes to what
is presently a fairly clear set of rules. These rules were worked out as a compromise
between the one view of assuming all registrations of domains that are the same
as or similar to a trademark were abusive, and the other that recognizes that
it is not against the trademark laws of the world to register a domain with
an intent to use it that is not fully developed at the time of the registration.
The majority decision would create a world where Intent to Use Registrations
could be destroyed by simply showing that the ITU registrant has changed his
mind after the fact, or was not entirely certain how the mark would finally
be used or on what type of product or service. I do not believe this was the
intent of the ICANN Directors or the many people who participated in developing
these rules. To do so, would be tantamount to repeal of some of the very sound
reasons the US and other nations permit ITU registrations.

Factual Background

Complainants are the owners of the United States trademark registrations for
(1) J. CREW for bags, clothing and catalog services, Reg. No. 1,308,888 and
(2) CREW for clothing, Reg. No. 1308064. Complainant uses as its principal mark
J. CREW, and admits that the trademark CREW has not been used as primary advertising
for its products and mostly only for in-store signs, etc. Even that is questionable
given that the only evidence of that is a few pictures of signs which could
have been created for this case, although I do not suggest that that is the
fact here. While the majority notes that substantial amounts of advertising
have been expended on the J. CREW brand-name, this also appears to be of little
relevance in the instant case because the trademark at issue is the CREW mark,
not J. CREW. It appears all of Complainant's products are distributed exclusively
through the retail stores, factory outlet stores, catalogs and an Internet site
at www.jcrew.com. In 1998 for example, Complainant sold under the J. CREW brand-name
$626 million worth of merchandise. There is no evidence before this panel that
any goods or services were ever sold under the CREW name.

The Respondent claims to have had no actual knowledge of the CREW trademark
when it registered the CREW domain name. There is no evidence before this panel
to the contrary. The majority states that "Telepathy has registered or acquired
more than 50 domain names consisting of words that may be trademarks
of others or which are generic words that others may wish to use." [2]
[Emphasis added]

The parties to this dispute are not unfamiliar with each other. Long prior
to this dispute, Respondent was solicited by Complainant to become part
of Complainantís affiliate network advertising its goods. Respondent agreed
to permit Complainant to place banner ads on Respondent's Web site that were
linked to Complainantís web site. Complainant promised Respondent to pay a commission
on sales made to customers using that link, but defaulted on its obligation
to pay the commission. At one time Complainantís attorney apparently unilaterally
offered to purchase the <crew.com> domain name from Respondent. When it
became clear that Respondent would not sell the domain name for a nominal sum,
Complainant revoked Respondent's participation in the affiliate network and
instituted this action. One might question whether this does not suggest that,
in fact, this is a case of reverse domain name hijacking in which the Complainant
has unilaterally decided this is a domain it would now like to have, after encouraging
its use by another, and that it is now trying to use the ICANN rules to achieve
what it cannot do by negotiations for the purchase of the name.

Nature of the word and trademark "CREW"

It is not disputed that the Complainant's trademark CREW and the Respondent's
domain name are essentially the same. Paragraph 4 (a) (i) of the ICANN Policy
requires that the domain name be identical or confusingly similar to the Complainantís
trademark. The Complainant clearly meets this test. In this case, however, that
fact cuts both ways because the word CREW is so generic. The American Heritage
Dictionary defines CREW as:

CREW1 (krõ) n. 1.a. A group of people working together;
a gang: a CREW of stagehands.b. A group of people gathered together
temporarily; a crowd. 2.a. All personnel operating or serving aboard
a ship. b. All of a ship's personnel except the officers. c. All
personnel operating or serving aboard an aircraft in flight. 3.a.
Sports. A team of rowers, as of a racing shell. b. The sport of rowing.
--CREW intr.v. CREWed, CREW∑ing, CREWs. To serve
as a member of a CREW: CREWed for my sister on a sloop; a spacecraft that
was CREWed by a team of eight people. [Middle English creue, military
reinforcement, from Old French creue, increase, from feminine past participle
of creistre, to grow, from Latin cr∂scere. See ker-2 below.]

CREW2 (krõ) v. Chiefly British. A past tense of crow2.

As discussed below, the fact that CREW is a generic term permeates any analysis
for trademark purposes. The majority's contention that any trademark registration
by Complainant means that Respondent should automatically be imbued with constructive
knowledge of the existence of the registration for purposes of the ICANN Policy,
while incorrect in and of itself, is particularly inappropriate for a generic
term. Additionally, as numerous courts have stated, a trademark owner is not
by definition entitled to all domain names incorporating their trademark or
even those identical to their trademark. See, Judge Pregersonís excellent discussion
of this issue in Lockheed Martin Corp. v. Network Solutions, Inc., 985
F.Supp. 949 (C.D. Cal. 1997), aff'd, 194 F.3d 980 (9th Cir. 1999).
This is especially so where the mark is generic and a common term. See, Cello
Holdings, LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936
(S.D. N.Y. 2000), denying cross motions for summary judgment because the Court
felt the Plaintiff could not prove bad faith registration under the ACPA because
of the generic nature of the word Cello, as a musical instrument. In Cellothe defendant even acknowledged that it had sought to sell the domain name
to others, as part of his business of selling domain names for generic use.
This is exactly the situation here, and the same logic should apply.

Furthermore, the majority seems to assume that a trademark owner has some sort
of God given right to use the trademark to the exclusion of others. As Justice
Holmes observed, "A trademark does not confer a right to prohibit the use of
the word or wordsÖ. A trademark only gives the right to prohibit the use of
it so far as to protect the owner's goodwill against the sale of another's product
as his." Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short,
the Complainant does not own all rights to the generic word CREW by virtue of
its trademark registration.

Registrant Rights or Legitimate Interests

Paragraph 4 (a) (I I) of the ICANN Policy asks whether the Respondent has any
rights or legitimate interests in respect of the domain name. Where the domain
name and trademark in question are generic, and in particular where they comprise
no more than a single, short, common word, the rights and interests inquiry
is more likely to favor the domain name owner. As the court held in Hasbro,
Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, (D. Mass., 1999), holders of
a famous mark are not automatically entitled to use that mark as their domain
name; trademark law does not support such a monopoly. If another Internet user
has an innocent and legitimate reason for using the famous mark as a domain
name and is the first to register it, that user should be able to use the domain
name, provided that it has not otherwise infringed upon or diluted the trademark.

The ICANN policy is very narrow in scope; covers only clear cases "cybersquatting"
and "cyber piracy," and does not cover every dispute that might rise over domain
names. See, for example, Second Staff Report on Implementation Documents for
the Uniform Dispute Resolution Policy (October 24th, 1999), http://www.icann.org/udrp/
udrp-second-staff-report-24oct99.htm 4.1(c) which states:

Except in cases involving "abusive registrations" made with bad-faith intent
to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy),
the adopted policy leaves the resolution of disputes to the courts (or arbitrators
where agreed by the parties) and calls for registrars not to disturb a registration
until those courts decide. The adopted policy establishes a streamlined, inexpensive
administrative dispute-resolution procedure intended only for the relatively
narrow class of cases of "abusive registrations." Thus, the fact that the policy's
administrative dispute-resolution procedure does not extend to cases where a
registered domain name is subject to a legitimate dispute (and may ultimately
be found to violate the challenger's trademark) is a feature of the policy,
not a flaw.

The majority decision spends substantial effort attempting to demonstrate that
what it terms "speculation in domain names" is sufficient per se
to be an "abusive registration." However, carefully reviewing the tests
provided in the ICANN policy indicates otherwise.

Bad Faith Registration and Use

The third element of the ICANN policy requires that Complainant prove that
the domain name was registered and is being used in bad faith. Paragraph 4 (B)(U)
of the policy sets forth four factual examples of circumstances under which
the registration and use of the domain name may be found to be in bad faith.
The Complainant in the instant case has not and cannot meet any of the four
alternative elements of a bad faith registration and use.

Specifically, the key alternative element which the Complainant is unable to
meet in paragraph 4 is underlined below:

(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs directly
related to the domain name; orÖ

Despite the majority's contention that Complainantís registration of the CREW
trademark somehow automatically imputes to the Respondent a violation of this
element, there is absolutely no such evidence before this panel. While it is
possible that the Respondent acquired the domain name for the purpose selling
renting or otherwise transferring the domain name, because CREW is a common
word, it cannot merely be assumed that Respondent's intent was to sell and transfer
the domain name to the Complainant.

(ii) you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; orÖ

Similar to the first test element above, one cannot simply, without additional
evidence, impute that when one registered a generic name he or she by definition
does so to prevent the owner of the trademark on a generic word from having
or using that domain name. While a court of law might come, after having taken
proper evidence, listened to testimony, and properly weighed the evidence, to
a determination that this was the intent of the domain name registrant, it is
not place of this panel to do so, based on unsupported assumptions of intent.

(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; orÖ

There is no evidence to support this element and it is thus completely inapplicable.

And finally, the last alternative test is

(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.

This element of the bad faith analysis also fails for two reasons. First, the
name is generic and as such does not have an immediate relationship to the Complainant
any more than it does to thousands of CREW teams around world or any of a number
of its other meanings. (Again, see the Hasbrodecision supra). Second,
there is no evidence that the Respondent in any way attempted to create confusion
as to the source of origin, sponsorship, or ownership of the domain name. Any
confusion which may have occurred was at least, in part, due to the conduct
of the Complainant whose own solicitation of the link on the web site of www.crew.com
caused an implied relationship. As noted above, at the behest of Complaintís
own representative, the Respondent was encouraged by an offer of a commission,
to, and did, place a banner ad on the CREW.com web site to direct traffic to
the Complainantís web site. In my judgment, it is highly illogical to find that
by placing the banner ad, solicited and sanctioned by the Complainant, that
directing traffic to the Complainantís business should be considered an intentional
attempt to create confusion as to the source of the domain. To the contrary,
it seems an admission by Complainant that there is no confusion likely.

Conclusion

We are not legislators, but arbitrators. The majority, in an effort to stop
a practice that it seems to take upon itself to believe is an unstated purpose
of the ICANN Policy, has completely over-stepped its mandate as arbitrators.
The decision creates a new and unauthorized test out of whole cloth, based on
assumptions of fact by arbitrators without evidence on the subject, instead
of using the appropriate and carefully crafted three step test for required
evidence set out by the ICANNí Policy and Rules. In my judgment, the majority's
decision prohibits conduct which was not intended to be regulated by the ICANN
policy. This creates a dangerous and unauthorized situation whereby the registration
and use of common generic words as domains can be prevented by trademark owners
wishing to own their generic trademarks in gross. I cannot and will not agree
to any such decision, which is fundamentally wrong. I respectfully dissent from
the majority decision of my fellow professional panelists.

2. The majority takes this fact,
rules it bad, and uses it to achieve its desired result. In contrast, see the
discussion in Administrative Panel Decision for the <thyme.com> domain
name, dispute case No.AF-0104.